Contract analysis

I. INTRODUCTION AND DECLARANT IDENTIFICATION

1. I, Rebecca Tanaka, declare under penalty of perjury pursuant to 28 U.S.C. § 1746 as follows:

2. My full name is Rebecca Tanaka. I am the General Counsel of Optiwave Semiconductor Corp. ("OWS" or "Optiwave Semi"). I have been employed by OWS since March 2017 — a period of over seven years — and am responsible for overseeing all legal affairs of the company, including intellectual property portfolio management and licensing, litigation, corporate governance, regulatory compliance, and commercial contracting. P

3. OWS is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business and corporate headquarters located at 4810 Bayside Technology Parkway, Suite 300, Santa Clara, California 95054. OWS is a fabless semiconductor company specializing in the design, development, and sale of silicon photonics chipsets and transceiver modules for data-center interconnect applicatio

4. OWS is the third-largest U.S. supplier of silicon-photonics transceiver modules for hyperscale data centers, serving many of the world's largest cloud services providers and enterprise data-center operators. For the fiscal year ended December 31, 2023, OWS reported total revenue of $487.3 million and net income of $61.4 million, as reflected in the company's audited financial statements prepared and certified by G

5. OWS holds a robust intellectual property portfolio consisting of 142 issued U.S. utility patents and 58 pending U.S. patent applications, covering technologies related to silicon photonics waveguide structures, coherent optical transceiver architectures, thermal management solutions for photonic integrated circuits, polarization-diverse grating couplers, and related semiconductor fabrication methods. OWS's key pro

6. The majority owner of OWS is Ridgeline Capital Partners, LP, a private equity firm that acquired a 55% ownership stake in OWS in 2019. Franklin Osei, a Managing Director of Ridgeline Capital Partners, serves as Chair of the OWS Board of Directors as Ridgeline's designee. The remaining equity is held by OWS's founders, current and former employees, and other institutional investors.

7. I have personal knowledge of the facts stated in this declaration. My knowledge is based on my role as General Counsel of OWS, my direct involvement in pre-suit licensing negotiations with Defendant Lumicore Technologies, Inc. ("Lumicore"), my oversight of OWS's commercial relationships with customers in the Eastern District of Texas and elsewhere, my review of OWS's business records maintained in the ordinary cou

8. I submit this declaration in support of Plaintiff Optiwave Semiconductor Corp.'s Opposition to Defendant Lumicore Technologies, Inc.'s Motion to Transfer Venue (D.E. 13), filed June 24, 2024, in which Lumicore seeks to transfer this action from the Eastern District of Texas, marshall Division, to the Western District of Texas, Austin Division.

9. The purpose of this declaration is to set forth facts within my knowledge that are relevant to the Court's analysis of the transfer factors under 28 U.S.C. § 1404(a). Specifically, this declaration addresses: (a) Lumicore's commercial presence and sales activity in the Eastern District of Texas, including its physical office in Tyler, Texas, and its sales of accused products to customers with facilities in this di

III. BACKGROUND ON THE ASSERTED PATENTS AND THIS LITIGATION

10. On April 22, 2024, OWS filed this patent infringement action against Lumicore Technologies, Inc. ("Lumicore"), Case No. 2:24-cv-00319-JRG, in the United States District Court for the Eastern District of Texas, marshall Division. The Complaint asserts infringement of four U.S. utility patents owned by OWS, which are described in detail below.

11. The first asserted patent is U.S. Patent No. 10,234,847 (the "'847 Patent"), entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss." The '847 Patent was filed on September 14, 2016, and issued on March 19, 2019. The '847 Patent is directed to novel waveguide multiplexer structures that achieve significantly reduced insertion loss across multiple wavelength channels in silicon phot

12. The second asserted patent is U.S. Patent No. 10,891,193 (the "'193 Patent"), entitled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate." The '193 Patent was filed on April 7, 2017, and issued on January 12, 2021. The '193 Patent covers integrated coherent optical transceiver architectures fabricated on a silicon substrate, incorporating novel modulator and receiver designs that enable

13. The third asserted patent is U.S. Patent No. 9,678,562 (the "'562 Patent"), entitled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks." The '562 Patent was filed on November 22, 2014, and issued on June 13, 2017. The '562 Patent was originally assigned to Solara Optics, Inc. OWS acquired all right, title, and interest in the '562 Patent from Solara Optics purs

14. The fourth asserted patent is U.S. Patent No. 11,402,015 (the "'015 Patent"), entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers." The '015 Patent was filed on August 30, 2019, and issued on August 2, 2022. The '015 Patent is directed to polarization-diverse grating coupler designs that improve coupling efficiency between optical fibers and silicon photonic waveguides, reducing polar

15. The accused products in this action are Lumicore's LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR transceiver modules, each of which OWS alleges infringes one or more claims of the asserted patents. These products are silicon-photonics-based transceiver modules that compete directly with OWS's own product families in the hyperscale data-center interconnect market.

16. OWS seeks compensatory damages of approximately $210 million for Lumicore's past and ongoing infringement of the asserted patents, together with enhanced damages for willful infringement, pre-judgment and post-judgment interest, and a permanent injunction prohibiting Lumicore from further infringement.

IV. LUMICORE'S PRESENCE IN THE EASTERN DISTRICT OF TEXAS A. Lumicore's Tyler, Texas Office

17. Lumicore Technologies, Inc. is a corporation organized and existing under the laws of the State of Delaware. Lumicore's corporate headquarters is located at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759, which is situated within the Western District of Texas.

18. However, in addition to its Austin headquarters, Lumicore maintains a sales office and technical support center at 2700 Earl Campbell Parkway, Suite 150, Tyler, Texas 75701. Tyler is located in Smith County, within the Eastern District of Texas, Tyler Division. A true and correct copy of publicly available information confirming the existence and address of this office is attached hereto as Exhibit 1.

19. Based on OWS's investigation and my review of publicly available information — including Lumicore's own website, publicly available Westmark Health IT profiles of Lumicore employees, press releases, and industry directory listings — the Tyler office is staffed by Lumicore employees who engage in sales, customer outreach, post-sale technical support, and relationship management for customers located in the Eastern

20. The Tyler office is not a mere mailing address, registered-agent location, or nominal presence of the kind that some defendants have used to manufacture or disclaim venue ties. Rather, it is a functioning commercial facility from which Lumicore actively conducts business on a regular and ongoing basis, including the sale, promotion, and technical support of the very products accused of infringement in this litiga

21. Through my role as General Counsel and my review of OWS's competitive intelligence reports, publicly available procurement records, and information obtained from OWS's own customers and sales team, I am aware that Lumicore has sold substantial quantities of accused products to customers with operations and facilities located within the Eastern District of Texas.

22. Specifically, Lumicore has sold accused products to at least three customers with significant operations in this district: a. Pinnacle Data Systems, LLC — Pinnacle Data Systems is a data-center operator that maintains colocation and enterprise data-center facilities at 1800 Judson Road, Longview, Texas 75601. Longview is located in Gregg County, within the Eastern District of Texas. Pinnacle Data Systems is a sig

23. These are not isolated, de minimis, or incidental sales. Each of these customers is a significant purchaser of silicon-photonics transceiver modules — the very product category at issue in this litigation. The accused products — LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR modules — have been deployed and are currently in use at data-center facilities operated by these customers within the Eastern

24. The presence of accused products at customer facilities within this district is not merely relevant to the question of personal jurisdiction or venue propriety; it is also directly relevant to the merits of OWS's infringement claims, as it establishes that acts of use and sale of the accused products have occurred within the Eastern District of Texas.

V. OWS'S CUSTOMER RELATIONSHIPS AND BUSINESS CONTACTS IN THE EASTERN DISTRICT

25. OWS also maintains significant business contacts with customers in the Eastern District of Texas. OWS sells its competing transceiver products — including the OWS-400ZR and OWS-800XR transceiver modules — to data-center operators and cloud services providers that maintain facilities within this district. OWS's sales team regularly interacts with customers in East Texas, and OWS's products are deployed at data-cen

26. OWS and Lumicore compete head-to-head for the same customer accounts in the Eastern District of Texas. Through my review of OWS's internal sales reports and competitive intelligence, I have direct evidence that Lumicore's accused products have displaced OWS's products at customer locations within the Eastern District. In multiple instances, OWS has lost sales to Lumicore at data-center facilities where OWS's tran

27. This competitive overlap in the Eastern District of Texas is directly relevant to OWS's lost-profits damages theory. OWS's damages expert has prepared a preliminary analysis based on a 38.2% market-share displacement model, which quantifies the lost profits attributable to Lumicore's infringement by reference to the sales that OWS would have made but for the availability of the infringing products. The fact that

28. Additionally, potential fact witnesses employed by OWS's and Lumicore's Eastern District customers may have knowledge of purchasing decisions, the role of patented features in product selection and evaluation, competitive pricing dynamics, product performance and reliability, and the impact of the accused products on OWS's market position — all of which are relevant to infringement, damages, and injunctive relief

VI. PRE-SUIT LICENSING CONTACTS AND KNOWLEDGE OF INFRINGEMENT

29. As General Counsel of OWS, I was directly and personally involved in the pre-suit licensing efforts directed at Lumicore. The timeline of those efforts is set forth below and is relevant to the willfulness of Lumicore's infringement and to the question of whether this litigation was precipitated by genuine and exhaustive efforts to resolve the dispute without the need for court intervention.

30. In October 2022, OWS's internal engineering team — led by Dr. David Naranjo, Vice President of Engineering — identified potential infringement of OWS's patents by Lumicore's LumiLink 400G-ZR+ transceiver module, which Lumicore had launched commercially in the third quarter of 2022. The engineering team's initial assessment was based on a review of publicly available product specifications, datasheets, and marketi

31. In November 2022, at my direction, OWS retained Benchmark Semiconductor Analysis, LLC ("Benchmark"), an independent semiconductor analysis firm located at 2244 Mission College Boulevard, Santa Clara, California 95054, to perform a comprehensive teardown and reverse-engineering analysis of the LumiLink 400G-ZR+ module. Benchmark's scope of work included optical and electron microscopy of the photonic integrated ci

32. On December 12, 2022, Benchmark delivered its teardown report to OWS. The report confirmed the presence of accused multi-channel waveguide multiplexer structures and embedded micro-channel thermal management features in the LumiLink 400G-ZR+ module that correspond to specific claim elements of the '847 Patent and the '562 Patent. The report also identified coherent transceiver architecture elements consistent wit

33. OWS then engaged FairPoint Licensing Group, LLC ("FairPoint"), a patent licensing advisory firm located at 500 Sansome Street, Suite 1400, San Francisco, California 94111, to conduct licensing outreach to Lumicore. FairPoint's Managing Director, Angela Reeves, led the engagement. FairPoint was retained to present OWS's licensing position to Lumicore in a professional manner and to negotiate, if possible, a reason

34. On January 15, 2023, FairPoint, acting on behalf of OWS, sent a detailed licensing and notice letter to Lumicore's General Counsel, Raymond Bautista, at Lumicore's Austin headquarters. The letter identified the '847 Patent, the '193 Patent, and the '562 Patent; described OWS's belief that Lumicore's LumiLink 400G-ZR+ product infringed claims of each patent; and invited Lumicore to enter into licensing discussions

35. On February 28, 2023, Lumicore responded to FairPoint's licensing letter through its outside counsel, Hawthorne Vega & Cruz LLP, specifically through partner Catherine "Kate" Rourke of that firm. In its response, Lumicore disputed OWS's infringement allegations and questioned the validity of the identified patents. Lumicore did not provide any detailed technical analysis to support its non-infringement or invalid

36. On April 20, 2023, I personally attended an in-person licensing meeting at Lumicore's offices in Austin, Texas. The meeting was attended by Angela Reeves of FairPoint on behalf of OWS, Raymond Bautista in his capacity as General Counsel of Lumicore, and Kate Rourke of Hawthorne Vega & Cruz LLP as Lumicore's outside counsel. At the meeting, OWS presented a detailed claim-chart analysis mapping the claims of the '8

37. On May 15, 2023, FairPoint sent a second, supplemental licensing letter to Raymond Bautista, this time adding the '015 Patent — which had issued on August 2, 2022 — and expanding the scope of accused products to include the LumiLink 800G-DR8 module, which Lumicore had launched in the first quarter of 2023. The supplemental letter provided additional claim-chart analysis for the '015 Patent and the newly accused p

38. On July 10, 2023, Lumicore, again through Kate Rourke of Hawthorne Vega & Cruz LLP, declined to take a license. Lumicore's response stated that it had obtained "competent legal opinions" that its products do not infringe any valid claim of the identified patents, and that Lumicore considered the matter closed. Lumicore did not share copies of any such opinions with OWS or FairPoint.

39. Despite having received detailed notice of OWS's patents and infringement allegations — including claim charts, a teardown analysis, and a face-to-face licensing meeting — Lumicore launched its next-generation LumiEdge 1600G-LR transceiver module in the fourth quarter of 2023. OWS's engineering team promptly analyzed the LumiEdge 1600G-LR and identified it as also infringing claims of the '193 Patent and the '015

40. Following the failure of the licensing discussions and the launch of the LumiEdge 1600G-LR, OWS determined that litigation was necessary to protect its patent rights. On March 18, 2024, OWS formally engaged Calderwood & Harkness LLP as lead litigation counsel for this action. The Complaint was filed on April 22, 2024.

VII. LOCATION OF WITNESSES AND EVIDENCE A. Plaintiff's Witnesses and Counsel in or Near the Eastern District

41. OWS's local counsel in this matter, Whitmore & Callahan LLP, is based at 110 North College Avenue, Suite 800, Tyler, Texas 75702 — within the Eastern District of Texas. The lead local counsel attorney for OWS is James "Jim" Callahan, a named partner at Whitmore & Callahan LLP. Mr. Callahan is admitted to practice in the Eastern District of Texas and has extensive experience litigating patent cases before Judge Gi

42. Additionally, customer witnesses employed by Pinnacle Data Systems (Longview, Texas), Frontier Cloud Services (Marshall, Texas), and CrossPoint Networking (Plano, Texas) are located in or near the Eastern District of Texas and would find it convenient to attend hearings, depositions, and trial proceedings in this district. These witnesses are expected to have knowledge relevant to the infringement, damages, and i

43. While Lumicore's corporate headquarters is located in Austin, Texas, within the Western District, Lumicore also has employees and potential witnesses located at its Tyler, Texas sales and technical support office at 2700 Earl Campbell Parkway, Suite 150, Tyler, Texas 75701, which is within the Eastern District of Texas. These employees are likely to have relevant knowledge regarding the sale, marketing, promotion

44. Several of Lumicore's customer-facing employees based in Tyler — including sales account managers, field application engineers, and technical support specialists — have regular, ongoing interactions with the Eastern District customers identified above (Pinnacle Data Systems, Frontier Cloud Services, and CrossPoint Networking). These employees may have relevant testimony regarding customer communications, product

45. Furthermore, Lumicore's own local counsel in this matter, Trask Eddington LLP, is located at 425 East Front Street, Suite 300, Tyler, Texas 75701 — within the Eastern District of Texas. Lumicore's lead local counsel attorney is Maria Garza of that firm. The fact that Lumicore itself has retained local counsel in Tyler further demonstrates the practical convenience and suitability of this forum for the litigation.

46. Employees of Pinnacle Data Systems, Frontier Cloud Services, and CrossPoint Networking who were involved in purchasing decisions for the accused products are potential third-party witnesses in this action. These individuals are located in the Eastern District of Texas and can be compelled to attend trial in this district pursuant to Federal Rule of Civil Procedure 45. Their testimony may address the role of speci

47. Additionally, I am informed that former Lumicore engineer Melissa Chen, who is now employed at Veridian Photonics, Inc., may have relevant testimony regarding Lumicore's awareness of OWS's patents during the design phase of the LumiLink 400G-ZR+ transceiver module. Ms. Chen's testimony could be relevant to the issues of willfulness and the design-around efforts (or lack thereof) undertaken by Lumicore during the

VIII. CONVENIENCE AND JUDICIAL ECONOMY

48. The Eastern District of Texas has well-established patent docket management procedures that promote the efficient resolution of patent disputes. The Court maintains an effective Markman hearing process, utilizes experienced judicial staff and technical advisors, and has a demonstrated track record of bringing patent cases to trial in a timely manner. These procedural advantages are significant and should weigh ag

49. Judge James R. Gilstrap has already issued the Scheduling Order in this case (D.E. 27, entered August 12, 2024), which sets the Markman hearing for March 14, 2025, and trial for February 2, 2026. The parties have been operating under this schedule and have begun planning their respective claim construction, discovery, and expert witness strategies in reliance on these deadlines.

50. Transferring this case to the Western District of Texas, Austin Division, would disrupt the established schedule, require the parties to start the case management process anew before a different judge, and cause unnecessary delay in the resolution of this action. Given the rapidly evolving nature of the silicon-photonics transceiver market and the ongoing commercial harm that OWS is suffering as a result of Lumic

51. The parties have already engaged in significant activity in this district. In addition to the filing of the Complaint and the issuance of the Scheduling Order, the following events have occurred in this forum: Lumicore filed its Answer and Counterclaims (D.E. 9); Lumicore filed its Motion to Transfer Venue (D.E. 13); the parties participated in a Rule 26(f) conference and submitted a Joint discovery/Case Manageme

52. OWS has retained local counsel in Tyler — Whitmore & Callahan LLP — specifically for this case and has relied on the Eastern District's procedural framework in planning its litigation strategy. OWS's lead litigation counsel at Calderwood & Harkness LLP has coordinated closely with Mr. Callahan and his team in Tyler on all aspects of case management, and OWS has incurred substantial costs in preparing to litigate